Bates v. Coe 98 U.S. 31 (1878)

U.S. Supreme Court

Bates v. Coe, 98 U.S. 31 (1878)

1. Persons sued as infringers may, if they comply with the statutory condition as to notice, give the special defenses mentioned in the Patent Act in evidence, under the general issue.

2. Such notices, in a suit in equity, may be given in the answer; and the provision is, that if any one of those defenses is proved, the judgment or decree shall be in favor of the defending party, with costs.

3. Defenses of the kind, where the invention consists in a combination of old elements, incapable of division or separate use, must be addressed to the entire invention, and not merely to separate parts of the thing patented.

4. Pursuant to that rule, the respondents alleged in their answer four of the statutory defenses, besides the denial of infringement: 1. that the complainant is not the original and first inventor of the improvement; 2. that the alleged improvement is fully described in the several patents, printed publications, and rejected applications for patents, set forth in the answer; 3. that the improvement secured by the reissued patent is not for the same invention as the original; 4. that the improvement had been in public use

and was known to the several persons named in the answer before the complainant made his application for a patent.

5. All of these defenses were overruled in the circuit court, and the respondents appealed to the supreme court, where the decision is that the first two defenses are not proved, the court being of the opinion that the evidence introduced for the purpose was not sufficient to overcome the prima facie presumption which the patent affords in favor of the complainant.

6. Two points were ruled in response to the third defense: 1. that the complainant is not obliged in such a case to introduce the original patent in evidence; 2. that the respondent cannot have the benefit of such a defense, if the original patent is not exhibited in the record.

7. Improvements were made by the complainant in drilling and bolt-tapping machines, called in the specification a new and improved drilling and screw-cutting machine. Annexed to the specifications arc the four claims of the patent, as set forth in the opinion of the court.

8. Inventors may, if they can, keep their inventions secret, and, if they do, no neglect to petition for a patent will forfeit their right to apply to the commissioner for that purpose. Mere delay is not a good defense, but the respondent, in a suit for infringement, if he gives the required notice, may allege and prove that the invention embodied in the patent in suit had been in public use or on sale more than two years prior to the complainant's application for a patent, and if lie alleges and proves that defense, he is entitled to prevail in the suit. Those requirements constitute conditions to the sufficiency of the defense; and the court held that the respondents had not complied with either to any effectual extent.

9. Infringement being denied in the answer, the burden of proof is upon the complainant, and the court decided that the charge in this case was fully proved.

10. Besides these defenses, the assignment of errors presented two others, not set up in the answer: 1. that the circuit court erred in holding that the patentee was the original and first inventor of the improvement specified in the second claim; 2. that the circuit court erred in holding that the patentee was the original and first inventor of the improvement specified in the fourth claim of the patent. Both of those claims refer to parts of the drilling feature of the improvement, which is merely a combination of old elements; and the court overruled the defenses for two reasons: 1. because they were not set up in the answer; 2. because they were addressed to a part only of an indivisible improvement, and not to the entire invention, as required by the act of Congress?

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